WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aquatherm Inc. v. Marketing Express

Case No. D2011-1370

1. The Parties

Complainant is Aquatherm Inc. of Lindon, Utah, United States of America, represented by David E. Weslow Esq., United States of America.

Respondent is Marketing Express of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <aquatherm.com> (the “Disputed Domain Name”) is registered with Rebel.com Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 12, 2011, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2011, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2011.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 9, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant states that it was founded in 1973 and “is a world-wide producer of plastic pipe systems for the potable water and heating sector.” Complainant further states that it is “the exclusive North American distributor for AQUATHERM brand products and is the exclusive licensee of all rights in and to the AQUATHERM mark and trade name in North America.” Complainant further states that its Aquathermgmbh, owner of U.S. Registration No. 2,490,048 for the mark AQUATHERM (registered September 18, 2001) (the “AQUATHERM Trademark”), “has provided Complainant with the exclusive license to use the AQUATHERM mark for distribution of AQUATHERM branded products in North America.” Complainant has provided a copy of its “Exclusive Distributor Agreement” and the relevant trademark registration certificate, in support of the foregoing.

The Disputed Domain Name was created on March 23, 2002.

Complainant states that Respondent has used the Disputed Domain Name in connection with “pay-per-click websites, including sites with content based entirely upon the fame and distinctiveness of the AQUATHERM mark.” Complainant has provided printouts from the Internet Archive’s Wayback Machine, as well as a declaration from Charles Clark (Inside Sales Manager for Complainant) in support thereof.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

The Disputed Domain Name is identical to the AQUATHERM Trademark.

The Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name because “Respondent has used the aquatherm.com domain name to display link directory websites containing links to websites selling the products of competitors of Complainant”; “[t]he only conceivable purpose of Respondent’s use of the AQUATHERM mark in the aquatherm.com domain name is to trade upon the goodwill associated with the AQUATHERM mark and for Respondent to thereby obtain payment on a ‘per-click’ basis and to prevent Complainant from using the domain name in association with its legitimate business”; and “there is absolutely no legitimate connection between the aquatherm.com domain name and Respondent.”

The Disputed Domain Name was registered and is being used in bad faith because “Respondent is taking advantage of Complainant’s AQUATHERM mark to attract traffic to its owns site, which has in the past included links to websites selling the products of competitors of Complainant and presently includes generic pay-per-click advertisements”; and Respondent has lost at least three previous decisions under the Policy: Mutuelled'Assurance du Corps de SanteFrancais - MACSF Assurances v. Marketing Express,
WIPO Case No. D2010-0242; Harrah's License Company, LLC v. Marketing Express c/o Domain Administrator, NAF Case No. 1280534; and Brown Shoe Company, Inc. and Brown Group Retail, Inc. v. Marketing Express c/o Domain Administrator, NAF Case No. 1273208.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registration cited by Complainant (U.S. Registration No. 2,490,048) it is apparent that aquatherm GmbH has rights in the AQUATHERM Trademark. And, based upon Complainant’s representations that it has an exclusive license to use the AQUATHERM Trademark for distribution of products in North America, it is also apparent that Complainant has sufficient “rights” in the AQUATHERM Trademark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.8 (“WIPO Overview 2.0”) (“In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP.”)

As to whether the Disputed Domain Name is identical or confusingly similar to the AQUATHERM Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “aquatherm”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2.

Given that the second-level portion of the Disputed Domain Name, “aquatherm,” is identical to the AQUATHERM Trademark, it is obvious without the need for elaboration, in this Panel`s view, that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, “Respondent has used the aquatherm.com domain name to display link directory websites containing links to websites selling the products of competitors of Complainant”; “[t]he only conceivable purpose of Respondent’s use of the AQUATHERM mark in the aquatherm.com domain name is to trade upon the goodwill associated with the AQUATHERM mark and for Respondent to thereby obtain payment on a ‘per-click’ basis and to prevent Complainant from using the domain name in association with its legitimate business”; and “there is absolutely no legitimate connection between the aquatherm.com domain name and Respondent.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iv), given that the website associated with the Disputed Domain Name has included links to websites selling products from Complainant’s competitors. Interestingly, Complainant acknowledges that the current website associated with the Disputed Domain Name does not contain such links – only that it has in the past contained such links. Moreover, the Panel’s independent review as of today shows that there is no website associated with the Disputed Domain Name. Nevertheless, these circumstances do not avoid a finding of bad faith. As a previous panel wrote in a frequently cited decision, “passive holding” of a domain name can constitute bad faith if “additional facts” are present. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. This panel considers past usage of the domain name in connection with a website that included links to websites selling products from Complainant’s competitors to be such an additional fact.